LUMINARA WORLDWIDE, LLC, Plaintiff, v. LIOWN ELECTRONICS CO. LTD. et al., Defendants Civil No. 14–3103 (SRN/FLN) United States District Court, D. Minnesota Signed December 01, 2015 Filed December 03, 2015 Counsel Courtland Merrill and Dan Hall for Plaintiff. Thomas Millikan, Patrick McKeever, and Tara Norgard for Defendants. Noel, Franklin L., United States Magistrate Judge ORDER *1 THIS MATTER came before the undersigned United States Magistrate Judge on November 16, 2015 on Defendants' motion to compel discovery (ECF No. 305). For the reasons set forth below, Defendants' motion is GRANTED in part and DENIED in part. A. Haunted Mansion candles and sparkle boards Plaintiff Luminara Worldwide, LLC (“Luminara”) claims that it is the exclusive licensee from Disney Enterprises, Inc. (“Disney”) of certain technology related to creating a unique artificial flickering flame effect, which may be used in certain lighting fixtures and artificial candles to simulate the appearance of a flickering flame. Third Am. Compl. ¶ 20, ECF No. 131. This technology involves the four patents-in-suit in this case. Id. Throughout this litigation, Luminara has stated that Disney originally developed this artificial flame technology to be used in the Haunted Mansion ride at Disneyland. See, e.g., ECF No. 67 at 2. On May 29, 2015, Defendant Liown served Disney with Rule 45 subpoenas, seeking documents and testimony regarding, among other things, prior art to the patents-in-suit. See McKeever Decl. Ex. 1, ECF No. 307. Specifically, Liown requested documents and deposition testimony regarding “[t]he designs of any flameless candles Disney has used in the Haunted Mansion or elsewhere.” Id. (Doc. Request No. 8; Dep. Topic No. 8). Disney elected to have Gary Schnuckle, the lead named inventor of the patents-in-suit, serve as Disney's 30(b)(6) witness. Schnuckle was deposed on September 2, 2015. During the deposition, Schnuckle indicated that artificial candles were installed in the Haunted Mansion around 2005. Id. Ex. 5. He also stated that artificial candles were used in other Disney theme park attractions. Id. After being asked about documents related to these candles, Schnuckle testified that all Disney attractions are documented in databases and binders at Disney, which are accessible to Disney “Imagineers” like himself. Id. Schnuckle stated that he instructed the team collecting responsive documents to search these databases for relevant information. Id. However, despite this instruction, Liown claims that Disney did not produce any documents regarding the imitation candles in its theme parks prior to Schnuckle's deposition. Mem. in Supp. of Mot. to Compel 7, ECF No. 306. In addition to the candles used in the Haunted Mansion, Schnuckle also discussed “sparkle boards” used by Disney “as a way to create caustic, chaotic ... lighting effects.” ECF No. 307, Ex. 5. Schnuckle stated that information on the use of “sparkle boards” would also be located in the aforementioned databases and binders at Disney. Id. Liown claims that documentation relating to the artificial candles and sparkle boards are relevant to its invalidity contentions. Accordingly, following Schnuckle's deposition, Liown sent Disney follow-up requests for information relating to these topics. ECF No. 306 at 15. Since this deposition, Disney claims that it has searched all locations that it reasonably believed might contain documents responsive to Liown's subpoena. Opp'n Mem. 3, ECF No. 314. Indeed, on November 9, 2015, following the filing of the present motion, Disney produced 920 pages of documents purportedly responsive to Disney's subpoenas. Id. However, it does not appear that Disney has produced any documentation regarding “sparkle boards.” See ECF No. 314 at 6–7. Disney indicated that it will continue to search for documents related to sparkle boards and produce any relevant information it can find. Id. at 7. Accordingly, Disney claims that an order compelling it to produce such documents is unnecessary. *2 After reviewing the record, the Court concludes that documents in Disney's possession relating to imitation candles used on or before September 30, 2008 in all Disney theme parks, and documents relating to the use of sparkle boards on or before September 30, 2008, are relevant and must be produced. Indeed, Disney appears to concede that this request seeks relevant information given that it has agreed to produce responsive documents that it can locate. Accordingly, to the extent documents responsive to Liown's subpoena related to imitation candles or sparkle boards exist, Disney must produce them within 21 days of the date of this order. Disney is instructed to specifically search in the locations identified by Schnuckle in his deposition. If any such documents do not exist, Disney must explicitly state this fact on the record in a formal response to Liown's subpoena. Liown has additionally requested to personally inspect the design databases and documents identified by Schnuckle at Disney's offices, and to re-depose Schnuckle once Disney's document production is complete. The Court concludes that such requests would unduly burden Disney, and therefore Liown's requests are denied. Additionally, the Court denies Liown's request to subpoena and depose a third party contractor who was revealed in documents produced by Luminara. B. Portfolio licenses Next, Liown seeks to obtain all licenses from Disney that could include the patents-in-suit. ECF No. 306 at 17. Specifically, Liown has requested any documents related to “Disney's efforts to license, including ... any other executed or draft license that includes any or all Disney's artificial flame technology patents, either expressly or implicitly as part of a larger portfolio.” Id. Liown claims that such evidence is relevant to the issue of whether Luminara has standing to sue for patent infringement without including Disney (the patent owner) in the lawsuit. The Court concludes that Liown's motion to compel Disney to produce portfolio licenses must be denied. First, whether Liown has standing is no longer at issue with this court. On April 3, 2015, Judge Nelson rejected Liown's claim that Luminara's complaint should be dismissed for lack of standing. See Order, ECF No. 143. While Liown's appeal of this decision remains pending before the Federal Circuit, that is of no consequence to this Court because, as far as this Court is concerned, the standing issue has been resolved. Accordingly, discovery solely related to the issue of standing is no longer relevant. See Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 352 (1978) (“[I]t is proper to deny discovery of matter that is relevant only to claims or defenses that have been stricken ....”). Additionally, although Liown believes that the patents-in-suit may be part of license portfolios with clients other than Luminara, Liown provides no evidentiary support for that belief. Indeed, Disney has explicitly stated that “the artificial flame technology patents are not part of another license portfolio.” ECF No. 307, Ex. 14 at 2. Liown's request for an order compelling Disney to produce “any draft or executed portfolio licenses with respect to Disney patents” in order to “judge for itself whether or not the patents-in-suit are included” is merely a fishing expedition. See Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir. 1992) (stating that the proponent of discovery must make a “threshold showing of relevance” before discovery of material is required in order to limit “fishing expeditions in discovery”). Therefore, to the extent Liown's motion to compel seeks production of Disney's portfolio licenses, the motion is denied. C. Liown's request to amend its Prior Art Statement Liown seeks leave to amend its Prior Art Statement in order to add the alleged Disney prior art related to imitation candles and sparkle boards discussed above. See ECF No. 306 at 19. *3 Rule 16 of the Federal Rules of Civil Procedure states, “A schedule may be modified only for good cause and with the judge's consent.” Fed. R. Civ. P. 16(b)(4). “The primary measure of good cause is the movant's diligence in attempting to meet the order's requirements.” Sherman v. Winco Fireworks, Inc., 532 F.3d 709, 716 (8th Cir. 2008). “[C]arelessness is not compatible with a finding of diligence and offers no reason for a grant of relief.” Metro Produce Distribs., Inc. v. City of Minneapolis, 473 F. Supp. 2d 955, 964 (D. Minn. 2007). An initial pretrial conference was held between the Court and the Parties' representatives on January 9, 2015. Minutes, ECF No. 86. During this conference, a discovery schedule was set. Among other things, the Court ordered that Liown serve its Prior Art Statement by March 2, 2015. Id. This was formalized in a Scheduling Order dated January 28, 2015. ECF No. 92. On February 26, 2015, the parties filed a stipulation to amend the Scheduling Order, requesting that both Parties' prior art statements be due by March 23, 2015. Stip., ECF No. 129. This stipulation was granted on March 5, 2015. Order, ECF No. 134. Liown chose submit its statement without conducting any discovery despite the fact that discovery had been open for over two months prior to the date its Prior Art Statement was due. After reviewing the record, the Court concludes that good cause does not exist to modify the Scheduling Order to allow Liown to amend its Prior Art Statement because Liown was not diligent in conducting discovery into potential prior art. Liown did not discover the newly alleged prior art until after it conducted its Rule 30(b)(6) deposition of Disney on September 2, 2015, nearly ten months after discovery commenced and over five months after its Prior Art Statement was due. Indeed, despite knowing that the patents-in-suit were owned and developed by Disney, Liown did not even subpoena Disney for documents or deposition testimony until May 29, 2015, well after the deadline to file its Prior Art Statement. Given this lack of diligence in Liown's discovery, the Court concludes that good cause does not exist to modify the Scheduling Order to allow Liown to amend its Prior Art Statement. D. Discovery from Jeff Thompson Jeff Thompson is an independent contractor who has done work exclusively for Candella/Luminara since 2009. ECF No. 312 at 8–9. On June 19, 2015, Liown served a subpoena for documents from Thompson. ECF No. 307, Ex. 18. Thompson objected to these document requests, claiming that he had already produced responsive documents or that he did not have any documents that responded to the requests. Id., Ex. 19. During Thompson's deposition, however, he admitted that he had never been shown the subpoena and therefore had not conducted any search for the documents that were requested by Liown. Id., Ex. 20. Indeed, Thompson admitted that he had relevant CAD files that had never been provided to counsel. Id. Luminara has objected to Liown's request for documents from Thompson on multiple grounds. First, Luminara claims that because Liown failed to comply with the ESI Protocol governing electronic discovery in this case, Liown's request should be denied. ECF No. 312 at 8–9. As discussed in a previous order by this Court, the parties agreed to identify five custodians whose documents would be searched for responsive information. See generallyOrder, ECF No. 277. Liown, however, did not comply with the ESI Protocol because it failed to identify any custodians of e-discovery prior to the agreed-upon date. See Id. Indeed, the Court previously denied a motion to compel by Liown on the grounds that Liown failed to comply with the ESI Protocol. Id. However, the ESI Protocol mandated only that Luminara and Liown provide a list of “party document custodians.” ECF No. 105 ¶ 3(A)(i) (emphasis added). Thompson explicitly stated in his deposition that he is an independent contractor, not an employee, of Luminara: *4 Q: So, since 2009, you've been doing contract work for Candella, and now Luminara? A: Yes. Q: And you are not an employee of Candella or Luminara? A: No. ECF No. 307, Ex. 20 at 17:13–18. While Luminara argues that this is an “artificial and meaningless distinction,” the Court disagrees. Luminara claims that in its initial disclosures, it identified Thompson as part of Luminara. ECF No. 312 at 9. However, a review of Luminara's disclosures suggests otherwise. Luminara's disclosures identified certain Luminara/Candella employees (e.g., Jeffrey Abercrombie, Jerry Cain, Dale Dykema, John Jacobson, and Michael O'Shaughnessy) by specifically including an affiliation with Luminara or Candella immediately below the individual's name. See Decl. Ex. A, ECF No. 257. In this same section, Luminara listed other potential, non-employee witnesses with their respective affiliation (e.g., “Doug Patton [,] Patton Design Inc.”). Id. Thompson, however, did not have any affiliation listed below his name. The disclosures simply gave his name and an address. Had Thompson truly been a “party,” Luminara would have identified him as specifically part of either Luminara or Candella. Given that (1) Thompson was not identified as being a part of Luminara in Luminara's disclosures and (2) there is no dispute that Thompson is not an employee of Luminara, the Court concludes that the ESI Protocol does not cover documents requested from Thompson. Second, although Luminara objects to this request because it claims that the requested documents have already been produced, see ECF No. 312 at 10, there is no way to know whether all of Thompson's relevant documents have been produced because Thompson admitted that he was never shown the subpoena and never conducted a search for documents pursuant to the subpoena. Indeed, Thompson admitted in his deposition that he has relevant CAD drawings in his possession that he never provided to Luminara. Nevertheless, the Court acknowledges that Thompson is not a party to this lawsuit and that he should not be subjected to undue burden or expense. Given the broadness of Liown's discovery requests and the fact that Thompson provided certain relevant documents in a previous lawsuit between these two parties, the Court orders that any document production by Thompson must be limited. Accordingly, Liown's requests are limited to only documents between the dates of January 1, 2009 and December 31, 2010. Liown must also identify five search terms to limit the volume of documents to be reviewed for responsiveness to its discovery requests. Liown must provide Luminara and Thompson with these search terms within three days of the date of this Order. To the extent documents responsive to Liown's subpoena exist, Thompson must produce them within 21 days of the date of this Order. If any such documents do not exist, Thompson must explicitly state this fact on the record in a formal response to Liown's subpoena. Accordingly, based upon all of the files, records, and proceedings herein, IT IS HEREBY ORDERED that Defendants' motion to compel (ECF No. 305) is GRANTED in part and DENIED in part as follows: *5 A. To the extent Defendants seek documents in Disney's possession relating to (1) imitation candles used on or before September 30, 2008 in all Disney Theme parks, and (2) Disney's use of sparkle boards on or before September 30, the motion is GRANTED. To the extent such documents exist, Disney must produce them within 21 days of the date of this Order. If any such documents do not exist or additional documents cannot be found, Disney must explicitly state this fact on the record in a formal response to Liown's subpoena. B. To the extent Defendants seek to re-depose Gary Schnuckle, the motion is DENIED. C. To the extent Defendants seek to personally search Disney's document repositories, the motion is DENIED. D. To the extent Defendants seek to subpoena and depose third party contractor Dan Van Lieshout, the motion is DENIED. E. To the extent Defendants seek all Disney's license portfolios, the motion is DENIED. F. To the extent Defendants seek to amend their Prior Art Statement, the motion is DENIED. G. To the extent Defendants seek documents from Jeff Thompson responsive to their subpoena, the motion is GRANTED in part. Defendants' request is limited to relevant documents responsive to five search terms determined by Liown. It is also limited to only documents between January 1, 2009 and December 31, 2010. Liown must identify its five search terms within three days of the date of this Order. Thompson must provide responsive documents within 21 days of the date of this Order. If any such documents do not exist or additional documents cannot be found, Thompson must explicitly state this fact on the record in a formal response to Liown's subpoena. H. In all other respects, the motion is DENIED.